A federal judge has ruled the $1.2 billion verdict Carnegie Mellon University won in a dispute over technological patents should be bumped up to $1.5 billion.
U.S. District Judge Nora Barry Fischer of the Western District of Pennsylvania tacked on enhanced damages and supplemental damages to the original jury verdict from 2012, although she didn’t increase the damages as much as Carnegie Mellon had asked. Fischer called the issue of enhanced damages “the ‘elephant in the room’ between the parties,” noting that it is “contested on all fronts.”
Following a four-week trial in late 2012, Marvell Technology Group was found to have willfully infringed on two patents held by Carnegie Mellon University.
Fischer went slightly beyond what Marvell had suggested as a cap to enhance the damages—it had asked for not more than 20 percent, in the event that she decided to grant the punitive measure of enhanced damages, which Carnegie Mellon had sought.
The judge decided on an increase of 23 percent.
“The court believes that this award is sufficient to penalize Marvell for its egregious behavior and to deter future infringement activities,” Fischer said. “The court also finds that this award is sufficiently tied to the level of culpability that Marvell exhibited throughout this case, appropriately accounts for all of the considerations set forth in Read and is consistent with the court’s prior decisions.”
Fischer referred to the 1992 opinion from the U.S. Court of Appeals for the Federal Circuit, which handles the appeals in patent cases, called Read v. Portec. It sets out nine factors for district courts to consider when they are tasked with deciding whether to award enhanced damages.
Ultimately, the judge found that four factors weighed toward an enhancement of the damages, four factors were neutral, and one weighed against enhancing the damages.
The one that weighed against enhancement, in fact, “strongly counsels against enhancing damages to the degree requested by CMU,” Fischer said, referring to Carnegie Mellon University. That is the factor that takes into account the financial status of the paying party.
The university had argued that Marvell’s willful infringement was sufficient to warrant a trebling of the damages, but, considering the actual impact of that multiplication, it offered that doubling the damages would be appropriate, according to the opinion.
Marvell’s current market capitalization is more than $7 billion, Fischer said in that part of her enhancement discussion, but that value has had a wide fluctuation during the course of this case, with a significant drop following the jury’s verdict.
“The court does not believe that Marvell is sufficiently capitalized to sustain an award of double or treble the current damages award of $1,248,690,559,” Fischer said, using a figure that included the supplemental damages of $79.6 million in addition to the original jury verdict of $1.2 billion.
“The court has determined that any penalty could best be tied to Marvell’s level of culpability and set an amount its business is able to sustain with its ongoing operations,” Fischer said.
The judge granted the supplemental damages, saying that it is well settled that a patent holder who prevails on an infringement claim is entitled to collect damages from uncalculated pre-verdict sales up to the date of the judgment.
“The court finds that supplemental damages are properly awarded to CMU for the period of July 29, 2012, through Jan. 14, 2013, because the jury did not have the opportunity to assess them due to a lack of financial information regarding Marvell’s ongoing sales of accused chips at the time of trial,” Fischer said.
The judge characterized the post-trial proceedings as “hotly contested” and has alluded to the tenor in earlier decisions on post-trial motions, saying in her denial last summer of Marvell’s motion for a new trial: “Marvell, in throwing old and new grievances at the court under the guise of prejudice, is trying to do what it could not do at trial: convince the court to throw out this case and hope that a second time around will be more successful.”
“The jurors, this court, and its staff, devoted four weeks of their life around the holidays to pay careful and thorough attention to the merits of the case, and unfounded, broad assertions of ‘prejudice’ or an ‘inflamed’ jury are insufficient to erase that result and mandate a new trial,” she had said.
Fischer had noted that it was a four-week trial spanning November and December and running daily from 9 a.m. to 5:30 p.m., with the court hearing arguments on objections and motions on both ends of the open-court trial hours. It produced 171 exhibits and a trial transcript that reached almost 4,000 pages. Each of the nine jurors was given a binder with the patents, the claim construction, initial instructions, a glossary of terms and pages for notes.
In her most recent opinion, enhancing the damages, Fischer analyzed the closeness of the case—one of the Read factors—and said, “The evidence on liability strongly favored CMU’s positions but the case certainly presented ‘close calls’ for the court on damages which appear to be ripe for decision by an appellate court.”
(Copies of the 72-page opinion in Carnegie Mellon University v. Marvell Technology Group, PICS No. 14-0487, are available from The Legal Intelligencer. Please call the Pennsylvania Instant Case Service at 800-276-PICS to order or for information.) •